DBT, India links Exclusive Licensing of Intellectual Property to TRL level

 Department of Biotechnology released DBT INTELLECTUAL PROPERTY GUIDELINES 2023.

The policy guidelines tried to answer the long-debated issue- Exclusive licensing of technology vs. non-exclusive? While recognizing the merits of exclusive licensing, an attempt is made to link it TRL level.

5.2. Exclusive licensing 

5.2.a. For research leads in lower TRLs, exclusive licensing may be considered. 

5.2.b. Public interest should be protected with clauses on the availability of the final product in Indian markets at affordable rates, especially for products with the potential for mass deployment. 

5.2.c. Timelines on commercialization should be clearly defined in a licensing agreement. 

5.2.d. Preference to Biotech SMEs and Manufacturing in India. 

5.2.e. Preferred purchase arrangements for start-ups for products developed under government-funded programs. 

5.2.f. A standard licensing agreement framework may be developed by the public institution that would ensure a share of the revenue earned by the licensee to be given to the partnering public institutions for a limited timeframe. 

5.2.g. The license shall be subject to the irrevocable, royalty-free right of the Government of India to practice or to require the licensee to grant sublicenses to responsible applicants, on reasonable terms, when necessary to fulfill the health safety or security needs of the country.

Research Landscape and performance benchmarking in biotechnology

This report gives a glimpse of what is happening in DBT-funded research institutes. Patent analysis:

Between 1997 and 2027 DBT applied for 256 distinct patent families, on the average of 22-24 per year. NII, Delhi is the msost active with 42 of the 256 followed by IGGEB with 27 and CDFC 11, NCCS 10, NBRC 9, RGCB-8

Also read: Ravi, R., Janodia, M.D. University-Industry Technology Transfer in India: a Plausible Model Based on Success Stories from the USA, Japan, and Israel. J Knowl Econ 13, 1692–1713 (2022). https://doi.org/10.1007/s13132-022-00908-z

https://link.springer.com/article/10.1007/s13132-022-00908-z

Compendium of Technologies available for transfer from IIT Delhi

 

IIT Delhi has filed more than 100 patents each calendar year for the last 5 years in a row , the technology transfer set-up led by Foundation for Innovation and Technology Transfer, IIT Delhi (FITT) strives to increase licensing deal flows.  In the recently held Industry Day at IIT Delhi, a compendium of IIT Delhi’s technologies was released. In the context that University technologies are generally early stage, this compilation by FITT captures 4 or higher TRL stuff. 

Some areas for Licensing

• Communication
• Environment
• Electric Vehicles
• Energy Management
• Healthcare
• Life Sciences
• Material Sciences
• Motors and Machines
• Power Generation and Disctribution
• Renewable Energy
• Smart Technologies
• Textiles

Transparency in revenue sharing of joint patent- case from Washington University and University of Wisconsin–Madison

Work of researchers at Washington University and University of Wisconsin-Medison results in U.S. Patent Nos. 5,246,925. Wisconsin Alumni Research Foundation (WARF) helps UW-Madison’s research enterprise by patenting inventions from university researchers, licensing the technologies to companies for commercialization. Washington University and WARF’s medical research partnership began in the 1990s. The two agreed that two-thirds of their shared patent’s revenues would go to WARF and one-third to Washington University. WARF then took the joint patent to Abbott Laboratories, a pharmaceutical company that launched the kidney dialysis drug known as Zemplar the same year it signed a licensing agreement with WARF.

Abbot successfully sued several generic product manufacturers by defending patents 5,246,925 , 5,587,497 and 6,136,799. Since the drug launched in 1998, it has generated about $6.1 billion in total sales revenue for Abbott. Over the duration of the patent’s life, which expired in 2015, Washington University received a little over $1 million while WARF received $426.5 million. 

When checks worth just a few hundred dollars began arriving at Washington University in the early 2000s, officials in St. Louis started pressing WARF for an explanation of the financial distribution. When  Washington University employee asked for a copy of the agreement WARF struck with Abbott, it was reported WARF cited non-existent confidentiality provisions preventing her from sharing documents with Washington University.

Aggrieved, Washington University in St. Louis sued WARF, in 2013  and court ruled in favour of Washington University, finding that WARF had misled its research partner about the patent’s true financial value and kept 99% of the patent’s royalties to itself. WARF contended it was fair distribution as bundle of patents were assigned to ABBOT.

References:

https://patents.google.com/patent/US5246925A/en

https://madison.com/wsj/news/local/education/university/uw-madisons-patent-licensing-arm-must-pay-at-least-32-million-to-ex-research-partner/article_2917cae0-8a84-56be-b7d9-6192377fd480.html

https://www.fr.com/files/Uploads/attachments/memoranda/Delaware%20Cases/julythroughdecember2009/Abbott%20Laboratories,%20et%20al.%20v.%20Teva%20Parenteral%20Medicines,%20Inc.,%20et%20al.pdf

https://techtransfercentral.com/2020/11/24/warf-must-pay-at-least-32m-to-former-research-partner-washington-u-in-patent-dispute/

CDOT GPON Technology- developed, patented globally and transferred to industry- but not a success story

C-DOT's GPON (Gigabit Passive Optical Network) technology offers an excellent mix of triple play services (voice, data & video) to end users. This is an indigenous development of C-DOT and offers advantages in terms of appropriateness for Indian environment, Innovation & local manufacturing. Current technology delivers a downstream data rate of 2.5 Gbps and an upstream data rate of 1.25 Gbps on a single fibre over a distance of up to 60 Kms. One optical fiber from OLT can be shared with up to 128 users. Signals from the OLT to the ONT are encrypted (secure) and then broadcasted to workstation devices. Signals from the workstation devices are then multiplexed back to the OLT.

In 2011, Indian Minister for Communications and IT Kapil Sibal,  transferred Gigabit Passive Optical Network (GPON) Technology to seven telecom manufacturers in public and private sectors – Indian Telephone Industries Ltd. (ITI), Bharat Electronics Ltd (BEL), VMC Systems Ltd, United Telecoms Ltd. (UTL), Sai InfoSystem (India) and S M Creative Electronics Ltd . In addition, Technology transfer agreement has also been signed with Tejas Networks Limited for customized development and Electronics Corporation of India Ltd (ECIL). US patent (Patent number: 10567075) for GIS based centralized fiber fault localization system was filed in 2016 and received in 2020.

Adoption of GPON in enterprise environment was studied by Stanislav Milanovic. Applied GPON based POLs in the enterprise environment enabled the convergence of voice, data and video onto a single strand of single mode fiber, which reduced the network infrastructure hardware to a fraction of what is required in terms of cabling and electronics in the conventional Ethernet approach. The solution not only enabled easier maintenance, but also improved efficiency with regard to end user-related, adds, moves and changes. Deployed GPON based POLs in the enterprise environment extended service to any stationary Ethernet end point. It enabled the delivery of reliable and highly secure unified network providing IP voice, data, and any type of video over a single fiber. It also increased the size of the network building block which greatly simplified enterprise network deployment, operation, and management. The solution supported energy conservation, since the optical LAN infrastructure utilized passive components like optical distribution hubs and fiber plant that required no power or cooling, resulting in significant energy savings. Implemented POLs provided immediate return on investment and a low total cost of ownership compared to copper-based LANs.

GPON Vs EPON

EPON and GPON have their own advantages and disadvantages. GPON is better than EPON from the performance index. However, EPON has the advantage of time and cost. GPON is catching up and looking forward to the future broadband access market. GPON will be more suitable for customers with high bandwidth, multi-service, QoS and security requirements and ATM technology as the backbone. For cost-sensitive, QoS, security, less demanding customer base, EPON has become dominant.

EPON began massive deployments in Japan and  South Korea. In 2005, China Telecom started EPON field trial in 4 provinces to learn how to deploy EPON. Interoperability is critical for the success and deployment of  EPON widely, so China Telecom started IOP research in 2005. In 2007 CTC achieved large scale and all‐round chip and system  EPON IOP the first time in the world (3 chip vendors, 10 system  vendors). For operators with 1G EPON-based deployments — particularly Korea Telecom, Japan‘s NTT DOCOMO access, China Telecom and China Unicom, 10G EPON is quickly becoming the next-generation technology of choice for providing both asymmetric and symmetric 10 Gbps services. 10G EPON equipment shipments and revenue continue to grow, driven currently by China Telecom, which is in the process of upgrading a portion of its first-generation 1G networks to provide more bandwidth to multi-dwelling units, or MDUs.

EPON technology matured with Chinese Telecom service providers active participation. What about Indian Scenario?

Hydrogen on Demand -long road to technology commercialisation.

In 1967, while working as a researcher at IBM, Woodall discovered that liquid alloys of aluminum and gallium spontaneously produce hydrogen if mixed with water. The research, which focused on developing new semiconductors for computers and electronics, led to advances in optical-fiber communications and light-emitting diodes, making them practical for everything from DVD players to television remote controls and new types of lighting displays. That work also led to development of advanced transistors for cell phones and components in solar cells powering space modules like those used on the Mars rover, earning Woodall the 2001 National Medal of Technology from President George W. Bush. Also while at IBM, Woodall and research engineer Jerome Cuomo were issued a U.S. patent in 1982 for a "solid state, renewable energy supply." The patent described their discovery that when aluminum is dissolved in liquid gallium just above room temperature, the liquid alloy readily reacts with water to form hydrogen, alumina and heat.
Woodall moved to Purdue university and continued to work on the aluminium alloy. His team succeeded in developing technology that produces hydrogen by adding water to an alloy of aluminum and gallium. When water is added to the alloy, the aluminum splits water by attracting oxygen, liberating hydrogen in the process. The Purdue researchers are developing a method to create particles of the alloy that could be placed in a tank to react with water and produce hydrogen on demand. The Purdue Research Foundation holds title to the primary patent, which has been filed with the U.S. Patent and Trademark Office and is pending. An Indiana startup company, AlGalCo LLC., has received a license in 2007 for the exclusive right to commercialize the process.
AlGalCo founder and president  Kurt Koehler is a businessman, not a chemist. He graduated with a degree in marketing and management from IU and went on to earn a Master's in European History. As luck would have it, an encounter with Purdue representatives at the Indiana State Fair piqued his interest and ultimately led him to Purdue professor Jerry Woodall, who had developed the aluminum alloy technology. After 14 years of beta testing product is rolled out for Carmel's city fleet. 

Defense Reserach labd in India offer patents - royalty free

The Indian Defence Research Development Organization (DRDO) has formulated a new policy that allows the Organization to offer complete access to its patents filed in India without any licensing or royalty fees.  According to the notification, an application for licensing must be made through the DRDO website and a processing fee of INR 1000/- must be deposited. The Applicant is also required to disclose its financial and technical capabilities in a comprehensive manner, along with the application. All applications will undergo a screening process to determine whether the applicant has met the eligibility requirements and has provided all the required information. On completion of the same, a non-exclusive license will be granted for a period of 1 year. The Licensee is obligated to furnish details to DRDO, every year, regarding Working of Patents – Form 27. On completion of one year, the license can be renewed without incurring any additional costs. DRDO’s patent portfolio primarily consists of inventions related to missile technology, aeronautics, naval systems, life sciences, armaments, combat engineering, electronics and communication material.

List of patents.

Licences DPI de brevet, commercialisation de la technologie, marketing de l'innovation: Première partie, principes fondamentaux des DPI (French Edition)

Inventor and author Majid EI Bouazzaoui translatied into the French language and adaptation to Moroccan law, the first part " Basic principles of intellectual property rights (Ipr) " of the Indian book " Patent Licensing, commercialization of technology, marketing of Innovation "...

It is a unique book that goes around the topic and presents the basic principles of intellectual property law (Ipr), analyses the weaknesses of the law in the face of accelerated technology and economic development; and Even offers solutions.

This is really a reference book that must exist in every home and be reread as often as possible. I recommend it to students, professors, scientists, Phd students, engineers, inventors, entrepreneurs, policymakers, politicians, etc.

Order on Amazon.